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International - Focus shifts to ICANN's post-application window processes

By Trevor Little
January 09 2012

While WTR Daily took a seasonal break, arguments over this week’s gTLD application process launch gathered pace. However, the focus is now turning to post-application window processes and whether additional trademark protections will be implemented at the second level.  

Before Christmas media reports surfaced that ICANN had entered crisis talks over the new online regime, with the ICANN board reportedly asking for a justification for moving forward on January 12 and seeking reassurance that the organisation was not at risk due to the worries aired by critics. The reports followed hearings in the United States, held by the Senate Commerce Committee and the House of Representatives Committee on Energy and Commerce, on the rollout of the new regime.

At the end of December, John D Rockefeller IV, chairman of the senate committee, wrote to John Bryson, secretary of the Department of Commerce, and Lawrence Strickling, administrator of the National Telecommunications and Information Administration (NTIA), asking “that you work… to ensure that ICANN's plan to expand gTLDs is implemented in a cautious, limited manner, which minimises the likelihood of negative impacts… Given that experts, the nation's chief consumer protection agency, and a substantial percentage of both the business and non-profit community agree that gTLD expansion should be implemented in a limited manner, I believe it is prudent for you to ask ICANN to re-evaluate its current plan. Because it does not appear to adequately address many of the anticipated negative impacts and costs, I believe you should consider asking ICANN to either delay the opening of the application period or to drastically limit the number of new gTLDs it approves next year”.

The letter echoed the Federal Trade Commission’s call for the first round of applications to be treated as a small pilot programme. However, in a subsequent communication with ICANN, Strickland drew short of making such a demand, suggesting that once the first round closes, “it would be useful for ICANN to assess whether there is a need to phase in the introduction of new gTLDs”.

However, he did suggest that ICANN now consider measures to mitigate the perceived need to file defensive registrations, adding: “Once the list of strings is made public, NTIA, soliciting input from stakeholders and working with colleagues in the Governmental Advisory Committee, will evaluate whether additional protections are warranted at the second level. Having the ability to evaluate the actual situations or conflicts presented by the applied-for strings, rather than merely theoretical ones, will certainly assist and focus everyone’s efforts to respond to problems should they arise.”

The Coalition Against Domain Name Abuse subsequently called for ICANN to consider including “a requirement in the applicant guidebook that all new gTLD registries that choose to sell second-level domains to registrants adopt a low-cost, one-time block for trademark owners to protect their trademarks in perpetuity”, and requested “a pricing structure where a single applicant applying for multiple gTLDs pays a reduced rate for the subsequent gTLD applications, provided that the applicant has trademarks for those applied-for strings predating 2008, and that those strings are exact matches of their registered marks”.

Domain Incite reports that ICANN may indeed release a new version of the applicant guidebook, but changes are likely to be limited to clarifications, rather than containing substantive changes.

For its part, and despite reports of crisis meetings, ICANN is looking ahead positively. Commenting on recent internal meetings, ICANN president Rod Beckstrom wrote this weekend: “Each executive was called on to indicate whether his or her group is fully prepared to fulfill their role in supporting the program. While we noted the ongoing presence of risks that were identified and highlighted to the Board and community in June, and the mitigation steps that have been taken, each executive indicated approval to proceed… On Thursday, we held an information call with the board of directors. I informed the Board that we are prepared to move forward and to open the program as planned.”

In an email sent to ICANN’s board of directors last week, Steve Crocker, chair of the organisation’s board of directors, outlined the organisation’s achievements through 2011, stating: “An enormous amount of work has gone into the programme and I, among many, many others, are eager to see what will happen. The opening of the window on January 12 will be a noteworthy day, but the closing date, three months later, and the publication date for the names a bit later, will also be quite noteworthy. I know there is a bit of controversy over some specific aspects of the programme, but I am confident the programme is well constructed and will run smoothly. I expect by the time we meet in Prague in June we'll have much to discuss along this line, and I look forward to hearing an initial assessment at that time.”

Come June, ICANN will not be alone in assessing the gTLD landscape, and trademark issues will be high on the agenda - both for the organisation itself, and for those seeking subsequent protection at the second level.

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